The French Patent Office allows the correction of the date of expiry of already granted SPCs following issuance of C-492/16
1. In case C-471/14 (Seattle Genetics, Inc.), the Court of Justice of the European Union held that “the date of the first marketing authorization in the Union” as referred to in Article 13(1) of Regulation (EC) No. 469/2009 is the date of the notification of the marketing authorization to its owner (and not its date of grant).
2. More recently (C-492/16, Incyte Corporation, issued on 20th December 2017), the Court of Justice now held that the correct date of expiry as clarified by Seattle should also apply to SPCs that were granted before the date of the Seattle decision. Accordingly, SPCs owners should be able to obtain a corrected date of expiry with their patent office.
3. Accordingly, the French Patent Office (INPI) recently published its practice in this respect (click here). For all those SPCs that are still in force and for which the expiry date was calculated based on the date of grant of the EU marketing authorization, it is now possible to rectify the date of expiry, by filing a request with the French Patent Office, in the name of the SPC owner as registered in the French patent register. This request should be filed together with a copy to the Official Journal stating the date of notification of the EU marketing authorization.
Please contact your usual LAVOIX attorney if you need more information and/or consider correcting the date of expiry of your SPCs.